UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`MYLAN PHARMACEUTICALS, INC. et al., Petitioners
`v.
`ALLERGAN INC.,1
`Patent Owner.
`____________
`Case IPR2016-01127 (8,695,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)
`
`
`
`BRIEF AMICUS CURIAE OF THE SOFTWARE AND INFORMATION
`INDUSTRY ASSOCIATION IN SUPPORT OF PETITIONERS
`
`
`1 Amicus has filed identical copies of this paper is in each proceeding identified in the
`caption pursuant to the Board’s Scheduling Order (Paper 10).
`
`

`

`TABLE OF CONTENTS
`
`
`
`
`
`
`
`Interest of the Amicus ............................................................................ 1
`
`Introduction and Summary of Argument ................................................. 2
`
`Argument ............................................................................................. 5
`
`I. Immunity Does Not Attach to Inter Partes Review. .............................. 5
`A. Validity determinations do not involve private rights. ..................... 6
`B. The AIA’s procedures lack the compulsion necessary to trigger
`sovereign immunity. ..................................................................... 8
`
`
`II. Sovereign immunity’s real party in interest doctrine prevents private
`parties from using immunity to evade IPR ..................................... 11
`
`
`III. Conclusion ................................................................................... 13
`
`
`
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`Cases
`Alhameed v. Grand Traverse Resort and Casino,
`10 OCAHO 1126 (Sept. 25, 2008) ......................................................................... 8
`Aqua Prod., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) .............................................................................. 11
`Bloomer v. McQuewan,
`55 U.S. 539 (1853) .................................................................................................. 7
`Chavez v. Arte Publico Press,
`204 F.3d 601 (Fifth Cir. 2000) ................................................................................ 3
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ...................................................................................... 2, 10
`Ex parte Young,
`209 U.S. 123 (1908) ................................................................................................ 3
`Fed. Mar. Comm'n v. S.C. State Ports Auth.,
`535 U.S. 743 (2002) ...................................................................................... 6, 9, 10
`Florida Prepaid v. College Savings Bank,
`527 U.S. 627 (1998) ................................................................................................ 3
`Great Plains Lending LLC v. Conn. Dept. of Banking,
`2015 WL 9310700 (Conn. Super. Ct. 2015) .......................................................... 11
`Hafer v. Melo,
`502 U.S. 21(1991) ................................................................................................. 12
`In re: Tammy Stroud v. Mohegan Tribal Gaming Auth.,
`2014 WL 6850018 (DOL Admin. Review Bd. Nov. 26, 2014) .............................. 8
`Covidien LP v. Univ. of Fla. Research Found. Inc., Case IPR 2016-01274, Paper 21
`(Jan. 25, 2017) .......................................................................................................... 6;
`Neochord, Inc. v. Univ. of Md., et al., Case IPR2016-00208, Paper 28 (May 23,
`2017) ......................................................................................................................... 6
`
`
`
`ii
`
`

`

`In the matter of Jamal Kanj v. Viejas Band of Kumeyaay Indians,
`2007 WL 1266963 (DOL Adm. Rev. Bd. Apr. 27, 2007) ....................................... 7
`Kentucky v. Graham,
`473 U.S. 159 (1985) .............................................................................................. 12
`Lear v. Adkins,
`395 U.S. 653 (1969) ................................................................................................ 12
`Lewis v. Clarke,
`137 S. Ct. 1285 (2017) .......................................................................................... 12
`Ex parte New York,
`256 U.S. 490(1921) ............................................................................................... 12
`In re: Private Fuel Storage,
`56 N.R.C. 147 (Oct. 1, 2002) .................................................................................. 8
`Santa Clara Pueblo v. Martinez,
`436 U.S. 49 (1978) .................................................................................................. 3
`Seymour v. Osborne,
`78 U.S. 516 (1870) .................................................................................................. 6
`Tennessee Student Assistance Corp. v. Hood,
`541 U.S. 440 (2004) ............................................................................................... 11
`Vas Cath, Inc. v. Curators of Univ. of Missouri,
`473 F.3d 1376 (Fed. Cir. 1990) ............................................................................... 8
`Statutes
`35 U.S.C. 135 ............................................................................................................ 8
`35 U.S.C. 317(a) ..................................................................................................... 10
`35 U.S.C. 318(b) ...................................................................................................... 11
`35 U.S.C. § 314 ....................................................................................................... 10
`35 U.S.C. § 315 ....................................................................................................... 12
`35 U.S.C. § 316(a) .................................................................................................. 10
`Rules
`Fed. R. Civ. Pro. 8(a) ................................................................................................ 9
`
`
`
`iii
`
`

`

`Regulations
`35 C.F.R. 42.22 (b) .................................................................................................. 10
`37 C.F.R. 42.12 ........................................................................................................ 11
`37 C.F.R. 42.51 ........................................................................................................ 11
`37 C.F.R. 42.74(a) .................................................................................................... 11
`46 C.F.R. 502.141(e)(1) ............................................................................................ 9
`46 C.F.R. 502.62(a)(3) .............................................................................................. 9
`46 C.F.R. 502.62(b)(6) .............................................................................................. 9
`
`Other Authorities
`H. Rep. No. 112-98 ................................................................................................... 2
`S. Rep. No. 102-280 .................................................................................................. 3
`Joe Mullin, Apple is Being Sued for Patent Infringement by a Native American
`Tribe, Ars Technica (Sept, 27, 2017), available at https://arstechnica.com/tech-
`policy/2017/09/apple-is-being-sued-for-patent-infringement-by-a-native-
`american-tribe/. . .................................................................................................... 3
`Jan Wolfe, Native American Tribe Holding Patents Sues Amazon and Microsoft,
`Reuters (Oct. 18, 2017), available at https://www.reuters.com/article/us-usa-
`patents-nativeamerican/native-american-tribe-holding-patents-sues-amazon-and-
`microsoft-idUSKBN1CN2G1. .............................................................................. 3
`David Crow, Pharma Industry Faces Hypocrisy Charge Over Patents, Financial
`Times (Nov. 1, 2017), available at https://www.ft.com/content/ad85104e-bd86-
`11e7-b8a3-38a6e068f464 ....................................................................................... 4
`Don Reisinger, Fortune, Apple Ordered to Pay More than $500 Million in Latest
`Patent Spat (July 26, 2017), available at http://fortune.com/2017/07/26/apple-
`wisconsin-patent-lawsuit/ . ............................................................................................... 4
`
`
`
`iv
`
`

`

`Interest of the Amicus
`
`
`Amicus Software & Information Industry Association (“SIIA”) is the principal
`
`trade association for the software and digital information industries. SIIA’s
`
`membership includes more than 700 software companies, search engine providers,
`
`data and analytics firms, information service companies, and digital publishers that
`
`serve nearly every segment of society, including business, education, government,
`
`healthcare, and consumers. As applicants for patents and also the subjects of patent
`
`infringement litigation, SIIA members are also interested in the proper functioning
`
`of the patent system.
`
`Amicus and its members strongly supported the AIA and its creation of inter
`
`partes review (IPR), which they welcomed as a compromise designed to improve
`
`patent quality and to restore confidence in the presumption of validity afforded
`
`patents issued by the Patent and Trademark Office. Its presence has directly
`
`benefitted a broad range of industries, which is why SIIA joined with other
`
`technology concerns, realtors and automobile manufacturers to urge the Supreme
`
`Court to affirm the constitutionality of the IPR procedure in the Oil States
`
`litigation.2
`
`
`2 Brief of Internet Association, SIIA et al. in Support of Respondent, Oil States Energy
`Services, LLC v. Greene (No. 16-712), available at
`http://www.siia.net/Portals/0/pdf/Policy/SIIA%20IA%20CCIA%20SAS%20Amicus%20Brief%
`20in%20Oil%20States%20Energy%20v%20Greene's%20Energy.pdf?ver=2017-10-30-153259-
`790.
`
`
`
`1
`
`

`

`Introduction and Summary of Argument
`
`
`
`Congress intended the America Invents Act “to establish a more efficient and
`
`streamlined patent system that will improve patent quality and limit unnecessary
`
`and counterproductive litigation costs.” H. Rep. No. 112-98 (part I), at 40 (2011).
`
`The creation of an inter partes review (IPR) proceeding was a centerpiece of that
`
`reform effort, designed to protect innovation from the effects of patents that should
`
`not have been granted.3 Instead, the procedure “helps protect the public’s
`
`‘paramount interest in seeing that patent monopolies . . .are kept within their
`
`legitimate scope.’” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144
`
`(2016).
`
`SIIA’s members have long been concerned about the peculiar inequities imposed
`
`on the intellectual property system by assertions of sovereign immunity. The
`
`immunity enables states to attempt to play by two sets of rules. On the one hand,
`
`states are able to exploit the full range of remedies as an owner of intellectual
`
`property, as one state recently did against Apple to the tune of hundreds of millions
`
`of dollars.4 That same state, however, may be immune from damages when it
`
`
`3 See id. at 39 (“The decisions reflect a growing sense that questionable patents are too
`easily obtained and are too difficult to challenge. Recent decisions by the Federal Circuit reflect
`a similar trend in response to these concerns. But the courts are constrained in their decisions by
`the text of the statutes at issue. It is time for Congress to act.”) (internal footnote omitted).
`4 Don Reisinger, Fortune, Apple Ordered to Pay More than $500 Million in Latest Patent
`Spat (July 26, 2017), available at http://fortune.com/2017/07/26/apple-wisconsin-patent-
`lawsuit/.
`
`
`
`2
`
`

`

`infringes the intellectual property of others, whether patent, copyright or
`
`trademark. E.g., Chavez v. Arte Publico Press, 204 F.3d 601, 604 (Fifth Cir. 2000)
`
`(holding copyright statute unconstitutional and upholding Eleventh Amendment
`
`immunity); Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1998)
`
`(holding Patent Remedy Clarification Act unconstitutional). Nonetheless, the use
`
`of immunity considered both by Congress and the courts in these circumstances
`
`was entirely defensive, and limited in the sense that it prevented non-consenting
`
`states and tribes from being sued for damages in federal court.5
`
`These proceedings now before the Board involve an attempt to exploit a
`
`different version of this inequity: a situation in which a State or a Tribe may, on the
`
`one hand, take full advantage of the remedies and benefits afforded the patent
`
`owner, but yet use sovereign immunity to escape IPR. And the respondents would
`
`not limit that immunity to those inventions that the state or Tribe developed—they
`
`would apply it to any patent that the sovereign acquires. Judge Bryson, sitting by
`
`designation from the Federal Circuit, saw the tremendous threat that this kind of
`
`arrangement posed to the patent system:
`
`
`5 To the extent a defendant engaged in ongoing violations of federal law, a suit for
`prospective declaratory and injunctive relief can be brought against an individual state or tribal
`official. E.g., Santa Clara Pueblo v. Martinez, 436 U.S. 49, 59 (1978); Ex parte Young, 209 U.S.
`123 (1908). For a historical overview of sovereign immunity and its relationship to intellectual
`property, see generally S. Rep. No. 102-280, at 2-6 (1992).
`
`
`
`
`3
`
`

`

`The essence of the matter is this: Allergan purports to have sold the
`patents to the tribe, but in reality it has paid the Tribe to allow
`Allergan to purchase—or perhaps more precisely, to rent—the
`Tribe’s sovereign immunity in order to defeat the pending IPR
`proceedings in the PTO… If that ploy succeeds, any patentee
`facing IRO proceedings would presumably be able to employ the
`same artifice. In short, Allergan’s tactic, if successful, could spell
`the end of the PTO’s IPR program, which was a central component
`of the America Invents Act of 2011.6
`SIIA is not alone in that concern: a spokesperson for Eli Lilly told the Financial
`
`Times that it was “not supportive of the sovereign immunity argument presented in
`
`the Allergan case.”7 In the wake of Allergan, a non-practicing entity has already
`
`transferred its patents to a tribe and is suing Apple.8 Another Tribe has sued
`
`Microsoft and Amazon.9 What began in the pharmaceutical industry will spread
`
`to other areas of technology—all it would take is either the assignment or exclusive
`
`licensing of a patent to an immune entity. The question that this panel must answer
`
`
`6 Memorandum Opinion and Order, [Doc. 522], at 4, Allergan Pharmaceuticals, Inc. v.
`Teva Pharmaceuticals, Inc., No. 2:15-cv-1455-WCB (E.D. Tex. Oct. 16, 2017).
`7 David Crow, Pharma Industry Faces Hypocrisy Charge Over Patents, Financial Times
`(Nov. 1, 2017) (““You have to make sure that you’re rewarding for innovation, not rewarding for
`other things — not rewarding for taking a 40-year-old drug price up 5,000 per cent,” said Dr.
`Leiden [CEO of Vertex], referring to the now infamous case of Martin Shkreli. “And not
`rewarding for prolonging a patent by selling it to an Indian tribe. That stuff shouldn’t be
`allowed.”), available at https://www.ft.com/content/ad85104e-bd86-11e7-b8a3-38a6e068f464
`(paywall).
`8
`Joe Mullin, Apple is Being Sued for Patent Infringement by a Native American Tribe, Ars
`Technica (Sept, 27, 2017), available at https://arstechnica.com/tech-policy/2017/09/apple-is-
`being-sued-for-patent-infringement-by-a-native-american-tribe/.
`9
`Jan Wolfe, Native American Tribe Holding Patents Sues Amazon and Microsoft, Reuters
`(Oct. 18, 2017), available at https://www.reuters.com/article/us-usa-patents-
`nativeamerican/native-american-tribe-holding-patents-sues-amazon-and-microsoft-
`idUSKBN1CN2G1.
`
`
`
`4
`
`

`

`is whether the law of sovereign immunity allows IPR to be circumvented through
`
`artifice.
`
`The answer to that question is no.
`
`First, IPR lacks the necessary components to trigger sovereign immunity.
`
`Agency proceedings involving patent validity do not involve private rights and
`
`duties, nor do they involve matters internal to the sovereign’s regulation of its
`
`affairs. Moreover, IPR’s procedures lack the compulsion necessary to render it
`
`sufficiently similar to litigation for the immunity to apply.
`
`Second, even assuming that the immunity might apply in some cases, the real
`
`party in interest doctrine requires courts to look beyond the pleadings to ensure that
`
`the state’s interests are being implicated when immunity is claimed or denied. That
`
`doctrine, which is specific to sovereign immunity, forecloses its application in this
`
`case and others less egregious.
`
`Argument
`Immunity does not attach to inter partes review.
`I.
`The first issue to be resolved—no matter whether a State or a Tribe’s patent is
`
`the subject of inter partes review—is whether the immunity attaches at all. First,
`
`IPR differs from administrative procedures that have been previously found to
`
`trigger immunity in material respects—both in terms of the coercion present in the
`
`
`
`5
`
`

`

`procedures, and the nature of the decisions that the Board makes about patent
`
`validity.
`
`Sovereign immunity is not, of course, limited to Article III courts. In Fed. Mar.
`
`Comm'n v. S.C. State Ports Auth., 535 U.S. 743 (2002), the Supreme Court held
`
`that the Eleventh Amendment protected the states from administrative litigation
`
`before the Federal Maritime Commission. The combination of the nature of the
`
`suit, which called the state to answer for violations of federal law without its
`
`consent, and the similarity of the procedures to those available in federal court
`
`caused the Court to find sovereign immunity available. See Federal Maritime
`
`Comm’n, 535 U.S. at 761.10
`
`A. Validity determinations do not involve private rights.
`Questions of patent validity differ from those adjudicated before the maritime
`
`commission and similar administrative adjudications. The patent grant is a public
`
`franchise granted by the federal government. See Seymour v. Osborne, 78 U.S.
`
`516, 533 (1870); see also Bloomer v. McQuewan, 55 U.S. 539, 549 (1853). During
`
`inter partes review, the PTO’s ultimate decision is whether it made a mistake in
`
`granting that franchise: either affirming its prior decision to grant a patent, or to
`
`
`10 SIIA is aware that a number of panels have issued non-binding opinions that FMC
`compels immunity to be available. E.g., Covidien LP v. Univ. of Fla. Research Found. Inc., Case
`IPR 2016-01274, Paper 21 (Jan. 25, 2017); Neochord, Inc. v. Univ. of Md., et al, Case IPR2016-
`00208, Paper 28 (May 23, 2017). For at least the reasons contained herein, SIIA believes these
`decisions to be incorrect.
`
`
`
`6
`
`

`

`revoke it. The federal agency is not compelling the enforcement of anyone’s
`
`private rights, which is the essence of the “indignity” thrust on a non-consenting
`
`sovereign when immunity attaches. Instead, the IPR procedure “helps protect the
`
`public’s ‘paramount interest in seeing that patent monopolies . . .are kept within
`
`their legitimate scope.’” As the Solicitor General explained:
`
`“[T]he USPTO was determining petitioner’s rights as against the
`world… The agency’s decision cancelling the claims gave
`Greene’s Energy Group no benefit that it would not have received
`if the USPTO had disapproved the claims during the initial
`examination, or if the Director had reexamined and cancelled the
`claims sua sponte. The proceeding therefore did not determine “the
`liability of one individual to another under the law as defined”—
`the characteristic hallmark of a matter of “private right.”11
`IPR does not impose legal liability or determine rights between adverse litigants.
`
`Instead, it is a procedure by which PTO reconsiders its decision to grant a patent as
`
`against the public. Cases that would force courts to adjudicate internal tribal
`
`affairs, or vindication of private rights properly trigger immunity, and are readily
`
`distinguishable. See, e.g., In the matter of Jamal Kanj v. Viejas Band of Kumeyaay
`
`Indians, 2007 WL 1266963 (DOL Adm. Rev. Bd. Apr. 27, 2007) (alleging violation
`
`of employee rights to whistleblower protection) (cited in Tribe Motion to Dismiss
`
`at 15); In re: Tammy Stroud v. Mohegan Tribal Gaming Auth., 2014 WL 6850018,
`
`at *2 (DOL Admin. Review Bd. Nov. 26, 2014) (whistleblower retaliation);
`
`
`11 Oil States Energy Servs. LLC v. Greene’s Energy Group, Inc. (No. 16-712), Br. of Federal
`Respondent, at 24.
`
`
`
`7
`
`

`

`Alhameed v. Grand Traverse Resort and Casino, 10 OCAHO 1126 (Sept. 25, 2008)
`
`(alleging employment discrimination against a Tribe); In the Matter of Private Fuel
`
`Storage, 56 N.R.C. 147, 159 (Oct. 1, 2002) (finding immunity from inquiry into
`
`tribal leadership’s alleged misappropriation of income) (cited in Tribe Motion to
`
`Dismiss at 16). The same is true of the interference proceedings that triggered
`
`immunity in Vas Cath, Inc. v. Curators of Univ. of Missouri, 473 F.3d 1376 (Fed.
`
`Cir. 1990), in which an interference was instituted over an issued patent. Although
`
`it may determine questions of validity, the primary function of a patent interference
`
`is to determine who was the prior inventor. 35 U.S.C. 135. The PTO determines
`
`who owns the patent franchise, not whether the franchise exists in the first
`
`instance. At its core, the interference is strongly analogous to a quiet title action—
`
`precisely the kind of private-rights determination litigated at common law.
`
`Sovereign immunity should not apply to IPR, which is a procedure by which the
`
`Patent Office reconsiders its decision to grant a patent, albeit with input from the
`
`public in order to make the procedure more efficient and effective.
`
`The AIA’s procedures lack the compulsion necessary to trigger
`B.
`sovereign immunity.
`The procedural differences between IPR and ordinary administrative
`
`enforcement action further prove that sovereign immunity does not apply. The
`
`Tribe cannot (and does not) claim that it has the right to prevent the Director from
`
`re-examining a decision to issue a patent. In addition, unlike the proceedings
`
`
`
`8
`
`

`

`before the Federal Maritime Commission, those in front of the PTAB differ in that
`
`they lack the elements of compulsion which trigger an entitlement to immunity.
`
`For example, Commission complaints must be verified, but consist of notice
`
`pleading, and the Commission has no choice whether to institute the case.
`
`Compare 46 C.F.R. 502.62(a)(3) (requiring “clear and concise” statement affording
`
`respondent “reasonable definiteness” of acts in dispute) with Fed. R. Civ. Pro. 8(a)
`
`(requiring “short and plain” statement of the case); see also Federal Maritime
`
`Comm’n, 535 U.S. at 764 (commission has no choice but to institute). Failure to
`
`respond to the bare-bones allegations in the complaint results in a waiver of the
`
`party’s right to appear, an admission of particular facts, and default. See 46 C.F.R.
`
`502.62(b)(6). In addition, the maritime procedures permitted discovery
`
`coextensive with the federal rules, touching matters reasonably likely to lead to
`
`admissible evidence. 46 C.F.R. 502.141(e)(1); see also FMC, 535 U.S. at 758
`
`(describing similarities between maritime proceeding and federal litigation). All of
`
`these procedural devices, as in the litigation context, exist as of right, and they
`
`exist entirely at the discretion of the private party. By exonerating a petitioner’s
`
`private rights against the sovereign under the maritime laws, and these procedures
`
`coerce the sovereign’s participation by presenting it with a Hobson’s choice:
`
`“persuade the FMC of the strength of its position or stand defenseless once
`
`
`
`9
`
`

`

`enforcement of the Commission's order or assessment of civil penalties is sought in
`
`federal district court.” See id. at 763-64.
`
`The AIA’s procedures are notably different from the kinds of enforcement
`
`litigation at issue FMC and consistent with a re-examination of a prior agency
`
`decision. Any member of the public, including one that has not been threatened
`
`with suit and hence would have no standing to enter federal court, may file a
`
`petition with the PTO to have a patent declared invalid—as against the world. See
`
`35 U.S.C. § 316(a). The petitioner cannot rely on mere notice pleading, but instead
`
`must assemble a detailed explanation of the evidence including material facts,
`
`governing law, rules and precedent. See 35 C.F.R. 42.22 (b). The respondent
`
`forfeits nothing by failing to respond, as it is not required, see 35 U.S.C. § 314, and
`
`the Director may institute proceedings only if the patent has a reasonable
`
`likelihood of being held invalid. The Director has the authority to continue
`
`proceedings even if the parties drop out or settle. Cuozzo, 136 S. Ct. at 2144
`
`(citing 35 U.S.C. 317(a)). The patent owner also has the opportunity to amend its
`
`claims, thereby allowing the defendant to change the “facts” surrounding the
`
`proceeding. See Aqua Prod., Inc. v. Matal, 872 F.3d 1290, 1304 (Fed. Cir. 2017).
`
`The certificate issued by the Director—unlike an enforcement order—is self-
`
`executing. Compare 35 U.S.C. 318(b) with Great Plains Lending LLC v. Conn.
`
`
`
`10
`
`

`

`Dept. of Banking, 2015 WL 9310700, at *5 (Conn. Sup Ct. 2015) (cited in Tribe
`
`Motion to Dismiss at 16) (applying FMC due to presence of enforcement order).
`
`It is true that the PTAB procedures do have some hallmarks of litigation—some
`
`discovery is allowed, but its scope is comparatively narrow and consists largely of
`
`access to documents and witnesses relied upon in the petition. See 37 C.F.R.
`
`42.51. It is also true that the PTAB does have the ability to impose sanctions to
`
`preserve administrative resources and maintain order in its proceedings. See 37
`
`C.F.R. 42.12. Nothing in Federal Maritime Commission categorically bars an
`
`agency from having procedures designed to maintain the integrity of its re-
`
`examination process, or for leveraging the benefits of having the patent owner
`
`offer evidence to support the agency’s decision. Indeed, it is critical to note that
`
`PTO can continue the case entirely of its own accord. 37 C.F.R. 42.74(a) (Board is
`
`not a party to the settlement and may continue the action). Cf. Tennessee Student
`
`Assistance Corp. v. Hood, 541 U.S. 440, 453-55 (2004) (noting that some indicia
`
`of civil trials do not automatically implicate immunity by changing an in rem
`
`proceeding to an in personam one, and that the bankruptcy court can grant relief
`
`without the sovereign’s presence).
`
`II. Sovereign immunity’s real party in interest doctrine prevents private
`parties from using immunity to evade IPR
`Even assuming arguendo that the immunity doctrine applies to an IPR
`
`proceeding, the Tribe is not the real party in interest. When sovereign immunity is
`
`
`
`11
`
`

`

`claimed, “courts should look to whether the sovereign is the real party in interest to
`
`determine whether sovereign immunity bars the suit.” Lewis v. Clarke, 137 S. Ct.
`
`1285, 1290 (2017) (citing Hafer v. Melo, 502 U.S. 21, 25(1991)). The doctrine,
`
`which predates (and should not be confused with) 35 U.S.C. § 315, requires that
`
`the reviewing court “determine in the first instance whether the remedy sought is
`
`truly against the sovereign.” See id. (citing Ex parte New York, 256 U.S. 490, 500–
`
`502(1921)). Thus, for example, a suit against a state officer in his official capacity
`
`for damages is in fact a suit against the state. See generally, e.g., Kentucky v.
`
`Graham, 473 U.S. 159, 165 (1985) (collecting cases).
`
`When sovereign immunity is claimed by an entity that did not engage in the
`
`research and development of the underlying invention, amicus urges the Board to
`
`take a hard look behind the proverbial curtain to determine the level of the
`
`sovereign’s real interest. The doctrine can and should reach much further than the
`
`“sham” transaction at issue in this case, lest form trample substance and frustrate
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`the congressional purpose. See Memorandum Opinion and Order [Doc. 522], at 4-
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`8, Allergan Pharmaceuticals, Inc. v. Teva Pharmaceuticals, Inc., No. 2:15-cv-
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`1455-WCB (E.D. Tex. Oct. 16, 2017). see also Lear v. Adkins 395 U.S. 653, 670
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`(1969) (noting importance of protecting public from being forced to pay “tribute”
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`due to invalid patent claims). Indeed, where the Tribe has entered into any
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`revenue-sharing arrangement with a private party for a patent which it did not
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`develop, claims of immunity should be viewed with skepticism.
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`III. Conclusion
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`For the foregoing reasons, the Tribe’s motion to dismiss should be DENIED.
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`Respectfully submitted,
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`
`
`
`Christopher A. Mohr
`Vice President for Intellectual Property and
`General Counsel
`Software and Information Industry Association
`
`December 1, 2017
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